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Joke Gone Unanimously WrongSCOTUS Decision in Bad Spaniels and the Future of First Amendment and Lanham Act Cases

Daphne Benford-Smith | July 12, 2023
3 min read

Daphne Benford-Smith is the Founder and Managing Attorney of The Benford-Smith Law Firm, PLLC, where she zealously helps clients increase their value through trademark, copyright, and contract services. Daphne received her Juris Doctorate in 2018 from Thurgood Marshall School of Law in Houston, Texas where she was Executive Editor of the Law Journal and a member of The Houston Young Lawyers Association. In her spare time, Daphne enjoys playing flute, reading, consuming anime and manga, traveling, restaurant-hopping, gaming, and blogging.

In its initial brief before the Supreme Court of the United States, VIP Products (or “VIP,” the maker of the Bad Spaniels chew toy and Appellee in the case) stated that Jack Daniels needed to “learn how to take a joke.” Writing for the majority opinion, Justice Kagan surely seemed to take great delight in the whimsical Bad Spaniels toy. And while the Court acknowledged that the chewy dog toy cleverly evoked humor and parody, they believed that it was legally insufficient to overcome the Lanham Act’s likelihood of confusion standard. Specifically, the Court found that even though VIP’s product was a humorous, parodical toy, that VIP cannot invoke the First Amendment defense if the “mark is being used as a mark.” Further, the Court applied this same reasoning to the Ninth Circuit’s dismissal of dilution.

The question that now remains is what does this mean for future cases that involve the Lanham Act and the First Amendment? This question especially confronts the role of the Rogers test and future cases that hinge on whether a junior use is “infringement” or constitutionally protected “artistic expression.”

Despite the decades-long tension with the First Amendment test set forth in Rogers v. Grimaldi and the Lanham Act’s infringement standard, the Supreme Court approached Rogers in a surprising way. The Rogers test states that if the junior use of a trademark is an “expressive” work, it is not subject to Lanham Act analysis if it: 1) has artistic relevance and 2) does not explicitly mislead as to the source of the mark. Because of Rogers’ central role in these cases, many experts including renowned professor Thomas McCarthy, believed the Court would reverse and address the validity of the Rogers test.

But despite acknowledging the test was a “shortcut to dismissal”, the Court declined to address the validity of Rogers. In fact, part of the Court’s rationale relied heavily on the Second Circuit’s interpretation of Rogers and cases that followed that decision. The Court reasoned that Rogers was not meant to create an absolute defense for any mark that conveys humor, parody, or any other form of artistic expression. Further, the Court was sure to state that “almost all trademarks convey a message” and that simply conveying a message does not automatically permit Rogers to be applied over the Lanham Act. The Court admitted that this narrows the Ninth Circuit’s expansive application of Rogers when First Amendment considerations arise but does not do away with Rogers altogether. But how does one determine whether Rogers or the Lanham Act should apply if “all trademarks convey a message?”  Based on this decision, it will be up to the evidence (such as market research) and conduct of the parties.

Here, the Court used VIP’s conduct to determine whether they were using the Jack Daniels mark as a non-trademark parody or as a source-indicating trademark.  The Court highlighted the fact that VIP registered the names of their other quirky dog toys including: Dos Perros (#6176781), Smella Arpaw (#6262975), and Doggie Walker (#6213816). The Court also highlighted how on the Bad Spaniels dog toy at issue, VIP had a “Bad Spaniels” logo next to their “VIP Products logo.” Additionally, the Court considered how the toy was being sold commercially and how it was marketed along with survey results submitted by Jack Daniels and various amici. The Court determined that VIP made the use of the Jack Daniels mark as a “trademark” and therefore, VIP’s product must be analyzed under the Lanham Act’s infringement considerations.

Ultimately, the Court reversed the decision because the Ninth Circuit had not applied the Lanham Act nor the dilution standard. Also, the Court remanded for the Ninth Circuit to determine, using the Lanham Act standard, whether the parodical use could show a lack of consumer confusion.

So, what does this mean for future cases? This decision made it clear that the Lanham Act inherently considers First Amendment protection and that there need not be broad application of Rogers to undermine the Lanham Act. Although the extra-statutory standard set forth in Rogers will continue to be with us for the foreseeable future, one of the concurring opinions warned that courts should exercise caution in its application. Another concurring opinion warned about the use of survey research as evidence to show that the junior use is “using a trademark as a mark.” That concurrence stated that courts and parties alike should not rely solely on survey research to determine whether the Lanham Act should apply, as it can be biased and skewed. All in all, whether the “trademark is used as a mark” will determine whether Rogers or the Lanham Act applies for future cases.

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